Fisher v. Dees

• Decision Date: 10 July 1986
• Docket Number: No. 85-5888,85-5888
• Citation: 794 F.2d 432,230 USPQ 421
• Parties: , 1986 Copr.L.Dec. P 25,957, 13 Media L. Rep. 1167 Marvin FISHER d/b/a Marvin Music Company and Jack Segal, Plaintiffs-Appellants, v. Rick DEES, Atlantic Recording Corporation, Warner Communications, Inc., Defendants-Appellees.
• Court: U.S. Court of Appeals — Ninth Circuit

Page 432

794 F.2d 432

230 U.S.P.Q. 421, 1986 Copr.L.Dec. P 25,957,

13 Media L. Rep. 1167

Marvin FISHER d/b/a Marvin Music Company and Jack Segal, Plaintiffs-Appellants, v. Rick DEES, Atlantic Recording Corporation, Warner

Communications, Inc., Defendants-Appellees.

No. 85-5888.

United States Court of Appeals, Ninth Circuit.

Argued and Submitted March 3, 1986.

Decided July 10, 1986.

Allen Hyman, Cohen & Luckenbacher, Los Angeles, Cal., for plaintiffs-appellants.

Peter Laird, Arrow, Edelstein & Gross, P.C., Los Angeles, Cal., for defendants-appellees.

Appeal from the United States District Court for the Central District of California.

Before WALLACE, SNEED, and KOZINSKI, Circuit Judges

SNEED, Circuit Judge:

The plaintiffs-appellants, Marvin Fisher and Jack Segal, appeal the district court's grant of summary judgment disposing of their federal claim for copyright infringement and their state-law claims for unfair competition, defamation, and product disparagement. We affirm.

I. FACTUAL AND PROCEDURAL BACKGROUND

The plaintiffs-appellants, Marvin Fisher and Jack Segal (the composers), composed and own the copyright to the '50s standard "When Sunny Gets Blue" (the song). In late 1984, a law firm representing the defendants-appellees--disc jockey Rick Dees, Atlantic Recording Corp., and Warner Communications, Inc. ¹ --contacted Fisher and requested permission to use part or all of the music to "When Sunny Gets Blue" in order to create a comedic and inoffensive version of the song. Fisher refused the request.

A few months later, Dees released a comedy record album (also issued in cassette form) called Put It Where the Moon Don't Shine. One cut on the album, entitled "When Sonny Sniffs Glue" (the parody), is an obvious take-off on the composers' song. The parody copies the first six of the song's thirty-eight bars of music--its recognizable main theme. In addition, it changes the original's opening lyrics--"When Sunny gets blue, her eyes get gray and cloudy, then the rain begins to fall" to "When Sonny sniffs glue, her eyes get red and bulgy, then her hair begins to fall." The parody runs for 29 seconds of the approximately forty minutes of material on Dees's album.

The composers brought an action in federal district court for copyright infringement, unfair competition, product disparagement, and defamation. The complaint included a proper demand for a jury trial. Before the commencement of discovery, both sides filed motions for summary judgment. The district court granted summary judgment in favor of Dees on all the composers' claims and the composers timely filed this appeal.

II. DISCUSSION

The district court did not reveal the bases for its decision. Nonetheless, we may affirm if the record, viewed in the light most favorable to the composers, discloses no genuine issues of material fact and if Dees was entitled to judgment as a matter of law. See Frederick S. Wyle Professional Corp. v. Texaco, Inc., 764 F.2d 604, 609 (9th Cir.1985).

A. Copyright Infringement

Dees urges affirmance of summary judgment on the claim for copyright infringement on the ground that the copying of the song for purposes of parody constituted a fair use. ² We agree for the reasons discussed below.

1. Overview of the fair-use doctrine

The fair-use doctrine was initially developed by courts as an equitable defense to copyright infringement. In effect, the doctrine creates a limited privilege in those other than the owner of a copyright to use the copyrighted material in a reasonable manner without the owner's consent. See Harper & Row, Publishers, Inc. v. Nation Enterprises, --- U.S. ----, 105 S.Ct. 2218, 2225, 85 L.Ed.2d 588 (1985) (citing H. Ball, Law of Copyright and Literary Property 260 (1944)). Congress codified this judge-made doctrine in section 107 of the Copyrights Act of 1976, Pub.L.No. 94-553, Sec. 107, 90 Stat. 2541, 2546 (codified at 17 U.S.C. Sec. 107 (1982)); but that enactment did not freeze the fair-use doctrine in stone. Rather, Congress expressly sought to preserve the doctrine's common law character, leaving courts "free to adapt the doctrine to particular situations on a case-by-case basis." 17 U.S.C. Sec. 107 historical and revision notes (1982).

In restating the fair-use doctrine in section 107, Congress enumerated four nonexclusive factors for courts to consider:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

17 U.S.C. Sec. 107 (1982). In addition, in the legislative notes accompanying the provision, Congress listed examples "of the sort of activities the courts might regard as fair use under the circumstances." Id. Sec. 107 historical and revision notes (1982).

Congress named parody as one of these activities. Nonetheless, parody was not classified as a presumptively fair use. See Harper & Row, 105 S.Ct. at 2231. Each assertion of the "parody defense" must be considered individually, in light of the statutory factors, reason, experience, and, of course, the general principles developed in past cases.

There have been few cases in this circuit involving the parody branch of the fair-use doctrine. An early case, Benny v. Loew's Inc., 239 F.2d 532 (9th Cir.1956), aff'd by an equally divided Court, 356 U.S. 43, 78 S.Ct. 667, 2 L.Ed.2d 583 (1958), ³ held that " 'a parodized or burlesqued taking [was] to be treated no differently from any other [copyright] appropriation,' " id. at 537 (quoting lower court opinion, 131 F.Supp. 165, 183 (S.D.Cal.1955)). This decision was criticized by contemporary commentators, see Berlin v. E.C. Publications, Inc., 329 F.2d 541, 544-45 (2d Cir.) (listing critiques), cert. denied, 379 U.S. 822, 85 S.Ct. 46, 13 L.Ed.2d 33 (1964), and was essentially repudiated by Congress's recognition of parody in the notes to the Copyrights Act of 1976. See discussion, supra. Accordingly, in Walt Disney Productions v. Air Pirates, 581 F.2d 751 (9th Cir.1978), cert denied, 439 U.S. 1132, 99 S.Ct. 1054, 59 L.Ed.2d 94 (1979), we gave the Benny opinion a narrow interpretation and acknowledged that parody is a potential fair use subject to the multi-factor analysis codified in section 107. See id. at 756-58.

2. Applying the fair-use test

The composers advance five principal reasons why the parody before us is not a fair use: (1) the so-called parody is not actually a parody, or at least is not a parody of the composers' song; (2) Dees acted in bad faith; (3) Dees's use is commercial in nature; (4) the parody competes in the same market--record albums and tapes--as the song; and (5) the taking is more substantial than was reasonably necessary to "conjure up" the original in the mind of the audience.

In addition, the composers assert that the question of fair use is an issue for the jury. Even if the material facts pertaining to each factor in the fair-use test are undisputed, they maintain, the ultimate issue, fair use or no, is appropriate for determination on summary judgment only when no reasonable jury could have decided the question differently.

(a) Judge or jury?

We dispose of this last argument first, because it is completely undercut by the Supreme Court's recent decision in Harper & Row, Publishers, Inc. v. Nation Enterprises, --- U.S. ----, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985). The Court held in that case that "[f]air use is a mixed question of law and fact", id. at 2231, and that "[w]here the District Court has found facts sufficient to evaluate each of the statutory factors," an appellate court may conclude as a matter of law--without remanding for further factfinding--" 'that [the challenged use] do[es] not qualify as a fair use of the copyrighted work,' " id. (quoting Pacific & Southern Co. v. Duncan, 744 F.2d 1490, 1495 n. 8 (11th Cir.1984), cert. denied, --- U.S. ----, 105 S.Ct. 1867, 85 L.Ed.2d 161 (1985)).

No material historical facts are at issue in this case. The parties dispute only the ultimate conclusions to be drawn from the admitted facts. Because, under Harper & Row, these judgments are legal in nature, we can make them without usurping the function of the jury.

(b) Substantive fair-use issues

We now turn to the composers' numerous substantive arguments as to why the fair-use defense is not available.

(1) The subject of the parody

The composers assert that the parody, although it borrows from the original work, was not "directed" at the original. That is, a humorous or satiric work deserves protection under the fair-use doctrine only if the copied work is at least partly the target of the work in question. See Walt Disney Productions v. Air Pirates, 581 F.2d 751, 758 n. 15 (9th Cir.1978), cert. denied, 439 U.S. 1132, 99 S.Ct. 1054, 59 L.Ed.2d 94 (1979). Otherwise, there is no need to "conjure up" the original in the audience's mind and no justification for borrowing from it. Id; accord MCA, Inc. v. Wilson, 677 F.2d 180, 185 (2d Cir.1981).

We requested counsel to provide us with tapes of both Dees's parody and the original (as sung by Johnny Mathis). Although we have no illusions of musical expertise, it was clear to us that Dees's version was intended to poke fun at the composers' song, and at Mr. Mathis's rather singular vocal range. We reject the notion that the song was used merely as a vehicle to achieve a comedic objective unrelated to the song, its place and time. Cf. id. at 183-85 (purpose of saving the effort of composing original music); infra note 5.

(2) The propriety of Dees's conduct

One theme running through the composers' briefs is that Dees's alleged bad conduct should bar his use of the equitable defense of fair use. The principle invoked is sound. Because " '[f]air use presupposes "good faith" and "fair...